Japanese Frontrunners of Intellectual Property Rights - vol.2
Patent Productivity and the Role of Industry-University Collaboration
-Interview with Mr. Hiroshi Oyamada

By Eunice Lee

June 2, 2016

(Published on March 2, 2017)

Drawing on an academic and engineering research background, as well as his experiences working at a globally-ranked Japanese chemical firm, Hiroshi Oyamada provides insight on both the potential benefits and challenges of collaborative research projects between industry and universities. His research interests span topics in intellectual property that question the nature of productivity and the effects of co-invention relationships on patenting.

Q: What is your background in intellectual property (IP), and how did you come to hold your current position at Shin-Etsu? 1

Mr. Hiroshi Oyamada: When I was a master course student at the University of Tokyo, I majored in chemical engineering. The main subject of my research was chemical vapor deposition (CVD), a type of chemical process used in manufacturing to produce high-quality solid materials. In 1990, I began working at the research center of Shin-Etsu Chemical Company, where I focused mainly on optical fiber preform research. The "preform" refers to the glass blank from which the fiber is drawn in order to make fiber optic cables, which are used in telecommunication systems—for more than 20 years, my research centered on this particular subject. Later in 2010, I entered the University of Tokyo as a doctoral student in the Department of Advanced Interdisciplinary Studies (AIS). During that time, my research at Shin-Etsu continued to focus mainly on high-capacity optical fibers for telecommunication systems.

However, in 2013, I was appointed to a new position at the same company, Shin-Etsu, in the Administration Office of the Patent Application Group. After this move, my main responsibilities shifted from research to patenting. Consequently, I changed laboratories at the University of Tokyo and entered the Watanabe Laboratory of the Research Center for Advanced Science and Technology (RCAST) in August of that same year to focus on intellectual property rights and innovation.

Laws that govern physical phenomena can also be applicable to questions of human productivity.

Q: Are there any connections between your work inside and outside the university? How do your particular interests bridge the subject of your academic research and your responsibilities at a large chemical company?

Mr. Hiroshi Oyamada:At Shin-Etsu, my work involves making applications to the patent office for the many researchers at the company who draft patent claims—thus, I think about how to maximize patent quality. Similarly, my particular research focus in the Watanabe Laboratory is on the productivity of patents: that is, how to increase patent quality or quantity. More specifically, I am interested in Lotka's Law, a classical theory that describes the frequency of paper publication by authors in a particular field in terms of an inverse-square law 2 . Of course, the inverse square law is very important in the scientific fields, as exemplified by gravity and electricity. I am interested in examining why the same kind of relationship that explains physical phenomena can apparently be observed for human productivity as well.

In my research, I found that Japanese chemical companies do not follow the inverse-square line theorized by Lotka's Law; rather, the result is something more akin to a concave down curve 3 , which is indicative of higher productivity. Consequently, I began to investigate what causes the concave down shape, and whether there is a particular organizational structure or characteristic that gives rise to this trend.

Typically, most patents are associated with several inventors, and the first inventor may often collaborate with the second or third or even fourth inventor. I examined the relationship structure between co-inventors and the effect of various factors such as the size of the co-invention network. For example, if two different inventors both collaborate with the same third-party inventor, the invention relationships that result are very “tight”—I sought to assess whether such a dynamic would positively or negatively impact productivity in terms of both patent quantity and quality.

Q: Do you have any thoughts about the increasing fluidity between the spheres of industry and academia in today's society? What are the benefits that might arise from industry-university collaboration?

Mr. Hiroshi Oyamada:Collaboration between universities and companies can be very good in certain respects, as it holds the potential to overcome the gap that has traditionally existed between these two groups. Of course, companies usually tend to focus more on the application side of things. In contrast, universities and academic institutions generally focus on producing basic or new research. However, the problem is that universities often lack the knowledge or capability to make productive use of this material and consequently, such knowledge is not transferred to public benefit. However, sometimes companies are proactive and visit universities to “scout” potential research projects. If a company takes this kind of initiative to deliberately seek out basic research that may prove useful for a particular application, in such a case, industry-university collaboration can result in innovation and be very beneficial.

Arising from differences in patent laws between Japan and the US, the nature of collaborative inventions in the two countries is subject to unique nuances that are particular to each system.

Q: Alternatively, it seems that there must also be some challenges that can result from such collaboration. One of the unique aspects that shapes the IP system in Japan is the prevalence of joint research projects between industry and universities—indeed, the number of jointly owned patents is significantly higher in Japan than in the United States. 5 What are the implications of this dynamic on the negotiations between universities and industrial firms?

Mr. Hiroshi Oyamada:Yes, in my work outside the university, I have certainly witnessed some of the potential challenges that can arise from industry-university collaboration, particularly during the patent application process. For example, even if researchers are willing to engage in collaboration with industry, the contract process can prove to be a barrier. Officially beginning a joint project requires a formal contract that must first be carefully developed and managed. However, in their haste to get started, researchers often fail to recognize the importance of this first step or else forget the terms of the agreement and begin research prematurely. In such a case, if a viable innovation arises from the collaboration and the patent application process is initiated, conflict often occurs between the company and the university over the question of how to divide the rights to the innovation. The university, on one hand, desires financial rewards from the company because its only output is knowledge creation and does not itself produce the marketable good. However, in such collaborations, the product is often only in the early stages of development and the yield is very small—consequently, the company is reluctant to pay significant dividends to the university.

Furthermore, the issue of patent rights in collaborative inventions constitutes one of the major differences between patent laws in Japan and the United States. Contrary to the US, in Japan, non-exclusive licensing of a patent or the transfer of one of the owners' shares requires the consent of every joint owner of the patent. This can present an obstacle for the full exercise of a university's share of patent rights if the company who holds joint ownership refuses to allow licensing to another firm, for example. Potential limitations on universities' patent rights are also inherent in the US system, as the consent requirements in the US dictate that a jointly owned patent cannot be protected against infringement via a lawsuit without the agreement of all the owners. Thus, such differences have important implications for the process of technology transfer and the ownership of patents in Japanese versus US industry-university collaboration.

Interviewer: Eunice Lee

4th-Year Student, Department of History and Science, Harvard University (Class of 2017)

Footnotes

Ranked by Reuters as one of the 2015 Top 100 Global Innovators, Shin-Etsu is known as the largest chemical company in Japan and has the largest global market share of polyvinyl chloride, semiconductor silicon, and photomask substrates (source: “Top 100 Global Innovators,” Thomson Reuters, http://top100innovators.stateofinnovation.thomsonreuters.com (accessed Jun. 12, 2016)).

The inverse square law describes how the strength of a force or a flow of energy weakens with distance from the source, with the magnitude of a given quantity being inversely proportional to the square of the distance from the source (source: Ridpath, Ian. "Inverse-Square Law." In A Dictionary of Astronomy. Oxford University Press, 2012).

Concavity is a mathematical term to describe the slope of a curve. A concave down curve slopes down and is getting steeper (source: Clapham, Christopher and James Nicholson. “Concavity.” In The Concise Dictionary of Mathematics. Oxford University Press, 2009).